Alert: Why You Should File a Patent Application as Soon as Possible After March 16, 2013

On March 16, 2013, a fundamental change to United States patent law occurred. The America Invents Act (AIA) first-inventor-to-file (FITF) provisions went into effect. Since that date, any new patent application will be examined under the FITF provisions instead of the previous first-to-invent (FTI) provisions. What does this mean to you as a U.S. inventor? This alert summarizes five reasons why it is important to file a U.S. patent application as soon as possible after the invention and before any public disclosure.

Another inventor who files a U.S. patent application first may get the patent that you want. Under the AIA, the first inventor to file (not the first to invent) is presumed to be entitled to a patent.

Even if another inventor who files a U.S. patent application first does not get a U.S. patent, publication of that patent application may be “prior art” that would prevent your patent from issuing. Under the AIA, U.S. patent application publications are prior art as of the date that they are “effectively filed” (which may include a foreign or domestic priority date). The U.S. Patent and Trademark Office, USPTO, can use such application publications to reject your U.S. patent application that was filed between the effective filing date of the other patent application and that patent application’s publication date (generally 18 months after the filing date).

The AIA, unlike the previous patent law, does not provide a way for you to “swear behind” a publicly available document or patent publication to prove that your invention preceded this prior art. This is the result of the change of the law from FTI to FITF.

Yours or another’s public disclosure of the same or similar invention may be prior art that would prevent your patent from issuing unless you file a patent application claiming that invention within one year of such public disclosure. The AIA provides a one year “grace period” for your own public disclosure, but you might forget to file a patent application within one year. The AIA does not provide a one year grace period to you for another’s public disclosure, unless the other person obtained the subject matter of the invention directly or indirectly from the inventor or a joint inventor (or unless you first publicly disclosed the subject matter of the invention within the one year grace period).

Yours or another’s public disclosure, even if you file a U.S. patent application within one year, may prevent your patent issuing in another country, which does not have the one year grace period that the AIA provides for U.S. patent applications. However, a U.S. patent application filed before public disclosure of the invention is honored by most countries.

This is only a summary of the AIA FITF provisions. There are many other sections of the AIA and the sections have a great deal of interaction. For more information, contact one of the attorneys in our Intellectual Property Practice Group.